What is the Supplemental Register, and how does it differ from the Principal Register?
According to the USPTO, the “Supplemental Register,” it is one of two United States federal trademark registers. Of the two, the Supplemental Register is the lower and less desirable register that exists to provide trademark registration protection (i.e., the “®” symbol) to registrations not otherwise qualified under federal law. Contrary to opinion, the Supplemental Register is still powerful; in fact, if a trademark application does not go as planned, you should embrace the Supplemental Register.
In fact, many famous trademarks originally started out on the Supplemental Register, this is particularly true for geographically descriptive names (e.g., American Airlines), surname trademarks (e.g., O’Riley’s Auto Parts, or Smith & Doe LLP), and merely descriptive marks (e.g., Natural Herbal Supplements).
Here, I explain compare each register, and explain their relative pros and cons.
Table of Contents
- 1. What is the Supplemental Register?
- 2. Supplemental vs Principal Register Comparison Table
- 3. Benefits
- 4. Moving a Trademark From the Supplemental to the Principal Register
- 5. The USPTO Advised Me to “Amend to the Supplemental Register”
- 6. Examples of Marks that Will Receive an Amendment
- 7. Can I Use the ™, SM or ® symbol with a Supplemental Register?
- 8. Recommendation and Conclusion
1. What is the Supplemental Register?
Briefly, the Supplemental Register is merely one step below the Principal Register in protective quality. However, does that mean that this register is useless? No, not at all. In fact, while the Principal Register is the default register, that does not mean that the Supplemental Register is bad or useless.
As outlined above, certain marks that are “merely” or “geographically descriptive are not eligible for the Supplemental Register. An example is Denver Software Service. Another trademark ineligible for the Principal Register, but eligible for the Supplemental Register is a surname (e.g., Buckner’s Camera & Video Store).
I summarize the differences in each with a chart below.
The primary benefit of the Principal Register over the Supplemental register lies in a presumption of distinctiveness, petitioning the US Customs and Border Patrol to stop importing infringing goods bearing the same mark, and inability to file for incontestability (“incontestability” is discussed further in this article).
2. Supplemental vs Principal Register Comparison Table
|The Principal Register||The Supplemental Register|
|Can I use the “®” for the mark after it registers?||Yes.||Yes.|
|Another entity cannot register a trademark that is similar in appearance, sound, or commercial impression.||Yes.||Yes.|
|Ability to bring a lawsuit in federal district court against a trademark infringer.||Yes.||Yes.|
|Is there trademark protection for “distinctive” trademarks? “Distinctive” means that a mark has acquired “secondary meaning” through advertisement or through a high number of sales to the public.||Yes.||No. It is only for marks that have not yet acquired “secondary meaning.”|
|Is there a presumption that the mark-holder is the exclusive owner?||Yes.||No.|
|Can the trademark holder petition the United States Customs and Border Patrol to stop the import of infringing trademarks?||Yes.||No.|
|Will an Intent-to-Use application suffice?||Yes, however, the trademark owner will need to show proof of use at a later date.||No, the trademark owner must later file an Amendment to Allege Use (“AAU”).|
|Is the trademark eligible for Section 15 incontestability at a later date?||Yes, and this will make it more difficult for would-be infringers to take the mark.||No, marks on the Supplemental Register are not eligible for incontestability.|
|Is the trademark published for opposition?||Yes.||No. This means that there is no period in which another entity may oppose your mark before the USPTO. See 15 U.S.C. §1063.|
|Is the trademark liable to cancellation?||Yes.||Yes. See 15 U.S.C. §1092.|
|Is the Registration Certificate any different?||No. However, and it will say “Principal Register.”||No. However, it will say “Supplemental Register.”|
Given the negatives, why would a trademark applicant file a trademark on the Supplemental Register? By default, applicants file on the Principal Register. However, the USPTO may request that the applicant amend to the Supplemental Register due to “descriptiveness” issues. As explained above, there are three benefits to the Supplemental Register such as:
- allowing the applicant to bring a trademark infringement suit;
- the USPTO will not register a confusingly similar mark; and
- the applicant may use the ® after registration.
4. Moving a Trademark From the Supplemental to the Principal Register
As explained above, after an application is on the Supplemental Register for five years, the applicant may move the trademark from the Supplemental to Principal Register. This does not mean that the same application moves from one register to another. Instead, the applicant must file a new application for the Principal Register.
5. The USPTO Advised Me to “Amend to the Supplemental Register”
Generally, a trademark that is on the Supplemental Register is ineligible for more protective Principal Register under federal law. As such, if the USPTO determines that a trademark is ineligible for the Principal Register during examination, the USPTO issues an Office Action informing the Applicant. The most common reason a trademark is given an “Advisory to the Supplemental Register” is because it is: (1) “merely” or “geographically” descriptive; or (2) primarily a surname. These are two statutory reasons why the USPTO cannot list the trademark on the Principal Register.
Often, clients will come to me after receiving a Section 2(e)(1) – Merely Descriptive refusal. If the refusal is not generic, the USPTO will provide what is known as an “advisory” telling the applicant to “amend” their application. In plain English, this means that the USPTO is giving the applicant the option of moving to Supplemental Register in exchange for moving forward to trademark registration. Generally, if it is clear that a name is without question descriptive, it is best simply to accept the Examining Attorney’s recommendation. However, you can challenge this particularly if you have used a trademark in commerce for more than 5 years prior to the date of filing.
Below are examples of trademarks that are unlikely to reach the higher Principal Register:
6. Examples of Marks that Will Receive an Amendment
- For example, “THE BEST BLUEBERRY PIE SHOPPE” for a baked goods will fall under the Supplemental Register. Why? Here, the words such as “best,” “great” and “No. 1” are “laudatory,” and case law exists which states that laudatory terms are descriptive. See In Re Nett Designs, Inc, 236 F.3d 1339 (Fed. Cir. 2001) (affirming on appeal that the “Ultimate” in “THE ULTIMATE BIKE RACK” is descriptive). Additionally, “Blueberry Pie” describes an ingredient or quality the goods, which means that it is “merely descriptive.” Finally, the word “Shoppe” must be disclaimed as “generic.”
- Similarly, “MONTANA HERBAL REMEDIES” for health supplements would also receive an Amendment to the Supplemental Register. The reason is two-fold. First, “Montana” is a state, and is therefore “geographically descriptive” term ineligible for the Supplemental Register. Second, the words “herbal” and “remedies” describes the quality and purpose of the product, respectively.
- Finally, let’s assume there is a mark called “SMITH GRAPHIX COMPANY” for graphic design services. Here, the USPTO shall assume “Smith” is a surname, making it ineligible for the Principal Register. Second, the term “GRAPHIX,” while a misspelling, describes the services, namely, graphic design. Finally, “COMPANY” is a generic term which is not incapable of registration in and of itself. Of course, that does not mean that an applicant cannot use “COMPANY.” For example, if the name were “BANANA GRAPHIX COMPANY,” the term “BANANA” is “arbitrary” (i.e., completely unrelated to web design), and would likely register.
Related: If you want a stronger trademark, read What are Trademarks and What Do They Protect? , particularly the section on “Types of Trademarks, Definitions, and Examples Chart.”
7. Can I Use the ™, SM or ® symbol with a Supplemental Register?
Yes, you can absolutely use the ™ or SM symbol with a trademark on the Supplemental Register. However, you may only use the ® (a.k.a. the “registered symbol”) after you receive a Registration Certificate. If you amend a trademark to the Supplemental Register, then your Registration Certificate shall reflect that change.
8. Recommendation and Conclusion
In short, unless you used your trademark for more than 5 years continuously, you should accept the Supplemental Register if your mark receives an Office Action for a surname, or merely or geographically descriptiveness. If you received an Amendment to the Supplemental Register, we can help. Contact Syed Law with your questions about the Supplemental Register.